Mars, Incorporated v. Richard Grack
Claim Number: FA0807001217837
Complainant is Mars, Incorporated (“Mars”), represented by Ross
Q. Panko, of Arent Fox LLP, Washington, D.C., USA. Respondent is Richard Grack (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dovechocolatediscoveries.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Charles A. Kuechenmeister (Ret.)
Mars submitted a Complaint to the National Arbitration Forum electronically on July 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 29, 2008.
On July 29, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dovechocolatediscoveries.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 31, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 20, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on August 18, 2008.
Mars submitted an Additional Submission on August 21, 2008 that was determined to be timely and complete pursuant to Supplemental Rule 7.
Respondent submitted an Additional Submission on August 25, 2008 that was determined to be timely and complete pursuant to Supplemental Rule 7.
On August 28, 2008, pursuant to Mars’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles A. Kuechenmeister (Ret.) as Panelist.
Mars requests that the domain name be transferred from Respondent to Complainant.
1. Complainant, Mars, Incorporated (herein “Mars”), is the owner of all rights and interest in a variety of marks containing or comprised of DOVE, and DOVE CHOCOLATE, including DOVE, DOVE CHOCOLATE AT HOME, and DOVE & DESIGN (collectively the “Dove Marks”). The Dove marks are well known and famous, and consumers immediately recognize these marks as distinctive symbols of Mars’ goodwill.
owns valid and enforceable trademark registrations in the
3. Mars owns three intent-to-use applications for marks containing the wording “CHOCOLATE DISCOVERIES,” all of which were filed before Respondent registered the disputed domain name, <dovechocolatediscoveries.com> (the “Domain Name”).
Marks are extensively used, advertised and promoted throughout the
5. Without authorization from Mars, Respondent registered the Domain Name on or about April 28, 2008, long after the Dove Marks became well-known to consumers as signifying the source of Mars’ chocolate products. Such registration occurred shortly after his wife, a participant in Mars’ Dove Chocolate at Home venture, received an information packet from Mars disclosing its intent to launch a brand under the name DOVE CHOCOLATE DISCOVERIES and to acquire the corresponding domain name <dovechocolatediscoveries.com>.
6. Prior to being contacted by Mars, Respondent used the Domain Name in connection with a commercial website that provided multiple links to commercial websites advertising chocolate and goods containing chocolate, including <FineImportedChocolate.com>, <acai-chocolate.com>, <DarkChocolateForChocolateLovers.com>, <EatHealthyChocolate4Life.com>, and many others. Many of these websites are owned by entities that compete with Mars in the chocolate industry.
7. On June 17, 2008 Mars’ outside counsel sent an e-mail to Respondent requesting that he transfer the Domain Name to Mars. Respondent replied by e-mail the following day, refusing to do so.
8. The Domain Name is confusingly similar to the Dove Marks. It wholly incorporates Mars’ DOVE mark. The mere addition of the generic words “chocolate” and “discoveries” is not sufficient to alleviate confusion with Mars’ Dove Marks, especially since those marks are famous for chocolate. Thus, the addition of those words does not distinguish the Domain Name from Mars’ marks, and in fact creates an association between the Domain Name and Mars. Registration and use of such a domain is confusingly similar under ICANN Policy ¶ 4(a)(i).
9. The likelihood of consumer confusion is enhanced by Respondent’s use of the Domain Name to display numerous websites and trademarks owned by competitors of Mars.
10. Where, as here, a complainant makes a prima facie showing that the challenged domain name is identical or confusingly similar to its protected mark, the burden shifts to the respondent to show that it has rights or legitimate interests in the name. Respondent cannot satisfy that burden. In does not own any trademark or service mark registration that is identical, similar, or in any way related to the Domain Name or the Dove Marks, nor does he use a personal name, company name or title that incorporates the Dove Marks. Respondent has not made any bona fide offering of goods or services in connection with the Domain Name but merely uses it in connection with a website collecting links to other parties’ chocolate-related websites. This does not constitute a bona fide offering of goods or services.
12. Respondent registered the Domain Name with actual and constructive knowledge of Mars’ rights in the Dove Marks, and with knowledge of its long history of using those marks in connection with chocolate products prior to such registration. He did so with the intent to play off the significant goodwill that Mars has established in its Dove Marks.
13. Respondent’s particular use of the Domain Name, i.e., to display numerous links to websites owned by Mars’ competitors and other third-party sites advertising and selling chocolate heightens the likelihood of confusion and constitutes bad faith.
14. Respondent’s bad faith is further evidenced by the timing of his registration of the Domain Name. As described earlier, he registered the same shortly after his wife, a participant in Mars’ Dove Chocolate at Home venture, obtained an information packet from Mars disclosing its plans to launch a brand under the name DOVE CHOCOLATE DISCOVERIES and to acquire the Domain Name in pursuance of such plans. Respondent learned of Mars’ plans and registered the Domain Name in order to benefit from misdirected Internet traffic from consumers seeking information about the DOVE CHOCOLATE DISCOVERIES brand. This is the epitome of bad faith.
15. Respondent has made no legitimate noncommercial or fair use of the Domain Name.
1. Respondent is married to Dawnmarie U. Grack. On or about March 25, 2008 Mrs. Grack paid Dove Chocolate at Home (“DCAH”), one of Mars’ ventures, approximately $426 to join the DCAH multi-level marketing organization. Upon paying such fee she became a DCAH “Chocolatier.”
2. Respondent and Mrs. Grack have been involved with many “home-party” companies and they, as a couple, operate the businesses together. In addition to the DCAH registration fee, Respondent and Mrs. Grack purchased inventory and collateral material, and registration and deposits on trade shows were made. All of the funds so paid were provided by Respondent.
3. A primary selling point of the DCAH organization is the cachet of being able to use the Dove name. Chocolatiers are independent contractors and marketing is left to them. Mr. and Mrs. Grack invested a significant amount of time and money promoting the DCAH brand. DCAH provided a website service on which Mrs. Grack had a website (http://dovechocolateathome.com/sites/dawnmarie). She and Respondent together had a legitimate interest in the DOVE CHOCOLATE AT HOME name. A great deal of the goodwill Mars references in its Complaint is provided by the Chocolatiers.
4. After making significant investment in the DCAH brand name, Respondent & Mrs. Grack began hearing rumors that Mars would be changing the name. These rumors had many public sources. Respondent began monitoring domain names for a name suitable to leverage the DCAH license and also incorporate the rumored name change. Much to Respondent’s surprise, the rumored new name was not trademarked, nor was there an application to trademark it, nor was a domain name incorporating it registered.
5. When the rumors became overwhelming, i.e., reached a level of obvious public knowledge, Respondent decided to register the Domain Name to protect his investment and ensure that the name was “kept within the family.” He assumed at the time that if the re-branding happened, someone from DCAH would send a simple e-mail offering to pay the out-of-pocket expenses of the registration and perhaps even thank him for protecting the Domain Name.
6. The alleged commercial website described in the Complaint and shown on Exhibit F to the Complaint is an automated page that was displayed by GoDaddy.com, the Registrar. When Respondent registered the Domain Name he believed that he had caused it to be “parked” on a holding page made available by or through the Registrar. As such the website had no associated web server and in effect the Registrar, not the registrant, has total control over what is displayed. When Respondent learned from Mars’ counsel that the holding page was acting as a search page he immediately replaced it with a blank page.
7. Respondent never used the Domain Name to attract Internet users for commercial gain. Mars’ only evidence that he did was the GoDaddy.com parking page, which Respondent removed immediately upon being notified of its existence. Respondent never received any commercial gain from any use he made or caused to be made of the Domain Name.
8. Respondent’s first contact from Mars was a demand from its outside counsel, sent by e-mail on June 17, 2008, demanding immediate transfer of the Domain Name and threatening further legal action. Respondent replied by e-mail on June 18, 2008, stating that Mars’ facts were incorrect, that he had not used the Domain Name to link to any other commercial sites and thus was not acting in bad faith under the Policy, and that Mars did not have exclusive rights to the Dove name. He stated that he would not be transferring the Domain Name to anyone.
10. Neither Respondent nor Mrs. Grack has ever seen the information packet allegedly sent by Mars in April, nor did they ever speak with anyone at Mars at or about that time concerning its proposed use of DOVE CHOCOLATE DISCOVERIES as a brand name.
11. Respondent was willing to transfer the Domain to Mars at any time a representative of Mars requested such transfer and offered to pay Respondent’s out-of-pocket expenses of registering the same. He now asserts, however, that the Domain Name should not be transferred because of Mars’ failure to sustain its burden under the Policy.
C. Additional Submissions
1. Regardless of the source of his information at the time, Respondent knew or was reasonably certain that Mars was planning to use the name DOVE CHOCOLATE DISCOVERIES as a brand when he registered the Domain Name.
2. Respondent’s bad faith in registering the Domain Name is evidenced by the fact that prior to the filing of his Response he never expressed a willingness to transfer the Domain Name for payment of out-of-pocket costs or for any other consideration. He expressly stated in his email on June 18, 2008 that he would not transfer it to anyone.
3. Regardless of the fact that the links to websites of Mars’ competitors may have been furnished by GoDaddy.com, not Respondent, he is legally responsible for those links and their existence is evidence of his bad faith.
4. Respondent’s interest in the DOVE CHOCOLATE AT HOME name existed only because his wife, as a Chocolatier, was licensed by Mars to use it. That license terminated when Mars terminated Mrs. Grack’s affiliation with DCAH on July 15, 2008. Mars never authorized Respondent to use the Domain Name or its DOVE CHOCOLATE DISCOVERIES mark.
1. Respondent’s registration of the Domain Name was for the sole purpose of protecting it for future use by his and his wife’s DCAH venture, in conjunction with Mars, after he observed that Mars was not taking reasonable steps to acquire the Domain Name for its use and use by its Chocolatiers. It was not done in bad faith.
2. Respondent’s interest in his and Mrs. Grack’s DCAH Chocolatier business, including the http://dovechocolateathome.com/sites/dawnmarie website, gave him the right to register the Domain Name at the time he did, as there was no written policy from Mars prohibiting this action.
3. Respondent’s having created a situation in which the Domain Name resolved to other websites was unwitting and unintentional. He thought it would be kept out of search engines. The only way to reach the website represented by the Domain Name would be to type it directly into a browser. Respondent was trying to keep it from attracting Internet traffic because any traffic it did attract would be diverted away from his DCAH business, not to it. He never used it for commercial gain or to prevent the rightful owner from registering it, and thus there is no bad faith.
DISCUSSION AND FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
registration of the mark DOVE with the USPTO (Reg. 1,415,202 issued Oct. 28,
1986) is sufficient to establish its rights in that mark for purposes of Policy
¶ 4(a)(i). See Lockheed Martin
Corp. v Hoffman, FA 874152 (Nat.
Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently
established rights in the SKUNK WORKS mark through its registration with the
USPTO); see also Metro. Life Ins. Co. v. Bin g Glu, FA 874496
(Nat Arb. Forum Feb. 13, 2007) (finding rights in the METLIFE mark as a result
of its registration with the
Respondent’s <dovechocolatediscoveries.com> domain name is confusingly similar to Mars’s DOVE mark, especially considering the strong association in the marketplace of the name DOVE with the product chocolate. Further, the addition of a top-level domain designation and generic terms with a direct relationship to Mars’s business are not sufficient to distinguish Respondent’s domain name from Mars’s mark for purposes of Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Similarly, the addition of the generic top-level domain “.com” is not a distinguishing characteristic under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Domain Name is identical or confusingly similar to the DOVE Marks, in which Complainant has substantial and demonstrated rights.
Mars asserts and has presented evidence that Respondent does not own any trademark or service mark registration that is identical, similar, or in any way related to the Domain Name or the Dove Marks, nor does he use a personal name, company name or title that incorporates the Dove Marks. It also asserts that Respondent has not made any bona fide offering of goods or services in connection with the Domain Name but merely uses it in connection with a website collecting links to other parties’ chocolate-related websites, which does not constitute a bona fide offering of goods or services.
Complainant having thus made a prima facie case in support of its allegations that Respondent has no right or legitimate interest in respect of the Domain Name, the burden shifts to Respondent to show that he does possess rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent has failed to produce evidence supporting any rights or legitimate interest he may have in respect of the Domain Name. He claims a legitimate interest based upon his involvement in his and his wife’s business as a licensed Mars DCAH Chocolatier and Mars’s authorization for her and, by extension, Respondent to use DOVE marks in her http://dovechocolateathome.com/sites/dawnmarie website in connection with that business. That authorization terminated, however, on July 15, 2008, when Mars terminated her status as a Chocolatier. Mars never authorized either Respondent or his wife to register the Domain Name or to use the DOVE CHOCOLATE DISCOVERIES brand in any way.
Respondent does not contend that links to other businesses on the parking page established for the Domain Name constituted a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The name of Respondent does not contain any form
of the name DOVE or any variation thereof.
Neither is he commonly known by the Domain Name and as a result, he has failed to
establish rights or legitimate interests under Policy ¶ 4(c)(ii). See IndyMac
Accordingly, the Panel finds and determines that Respondent has no rights or legitimate interests in respect of the Domain Name.
First, as to the website resolving from the Domain Name, that website initially contained links to other websites representing businesses that competed in the chocolate industry with Mars. Respondent states that he believed that since he had caused the name to be “parked” on a page without content, it would not appear in any search engine, and would not attract Internet users. Additionally, he states, the Registrar, not the Respondent, had control over what was displayed, and thus Respondent was not responsible for the links to the competing sites. It is settled, however, that the registrant of a domain name is ultimately responsible for the content of a website that resolves from it. See StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these [competing] links for the website associated with the Domain Name. However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.”); see also Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”). The Respondent is responsible for the content of the website, and he must accept the consequences of and any and all inferences to be drawn from that content.
There is no question that Respondent’s registration and use of the Domain Name as above described created a likelihood of confusion with Mars’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. See Policy ¶ 4(b)(iv). Nevertheless, there is no evidence that Respondent intended to, or did, receive any commercial gain whatsoever from this use. He states on the contrary that it was his intent not to attract the attention of Internet users, and even if the website did attract such attention, Respondent never profited or received any economic gain as a result. These assertions are uncontroverted. The motive for economic gain appears from the plain language of Policy ¶ 4(b)(iv) to be an essential element of proving bad faith under this paragraph, and there is no evidence to sustain a finding of such motive here.
It has been held that a registrant
who uses a domain parking service provider, as Respondent did in this case, in
effect licenses the provider to use his domain name, and he receives economic
benefit from the arrangement. See
Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007). (“The Panel has no doubt that these parking
arrangements are structured for the purpose of attacting, for commercial gain,
Internet users by creating a likelihood of confusion with the VANCE Marks,
whether or not Respondent receives a penny of the click-through
revenues.”) This case, however, is
distinct from Vance. There, the Panel found that the respondent’s
purpose in parking the disputed domain names was to attract third parties
interested in purchasing them, that his real profit from the arrangement would
be gained only if the complainant saw what was going on and felt compelled to
purchase the names.
When Respondent registered the Domain Name, he knew or was reasonably certain that Mars was planning to launch a new brand by the name DOVE CHOCOLATE DISCOVERIES, which is literally identical to the Domain Name, and was planning to acquire the Domain Name for itself in connection with that brand. Respondent admits this. He also knew that Mars had a pre-existing legitimate interest in the DOVE Marks in connection with the distribution and sale of chocolate products, inasmuch as he was directly involved in a business that marketed Dove chocolate products under a license from Mars. He was not authorized by Mars to register the Domain Name and he himself had no right or legitimate interest in the name DOVE CHOCOLATE DISCOVIES. Notwithstanding his claim to have registered the Domain Name to “keep it in the family,” to reserve it for future use to protect his investment in his own business as a DCAH Chocolatier, from which Mars also benefited, he was not lawfully entitled as against Mars to register the Domain Name in his name.
Respondent asserted a facially plausible reason, not consistent with bad faith, for his having registered the Domain Name when he did, i.e., to protect it for future use in connection with the DCAH venture in which both Respondent and Mars were participants. Additionally, there is no evidence that Respondent had a practice of registering or acquiring domain names with the primary intent of selling them to the legitimate owners of marks incorporated into them, which distinguishes this case from the circumstances involved in Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Respondent is highly opportunistic in respect of domain names and acquires them primarily for the purpose of re-sale rather than for use in his other businesses.”).
Nothwithstanding the foregoing, two factors present here compel a finding of bad faith registration and use. First, his registration of the Domain Name was clearly wrongful as against Mars. He had no right to register it in his own name. He could not have made any active commercial use of the name himself without directly infringing on the establsihed rights of Mars to the name DOVE CHOCOLATE DISCOVERIES. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
Secondly, Respondent has persisted in his refusal to transfer the Domain Name to Mars, notwithstanding Mars’ clearly superior claim to the name DOVE CHOCOLATE DISCOVERIES and the corresponding Domain Name. The time for him to have transferred the name to Mars, had he registered it with the intent of “protecting” it, passed long ago. His continued refusal to do so strongly suggests that his motives in registering the name himself were other than as he asserted and that he intended instead to deny Mars the ability to register and use the Domain Name. His initial registration of the Domain Name and continued refusal to transfer it to Mars fall within the parameters of Policy ¶ 4(b)(ii), as what has become a pattern of registering and using the Domain Name simply to prevent Mars, as the owner of the mark DOVE CHOCOLATE DISCOVERIES, from reflecting that mark in its corresponding domain name. This constitutes bad faith under the Policy.
The Panel is not unmindful of the fact that for purposes of Policy ¶ 4(b)(ii) “pattern” has frequently been
taken to mean numerous registrations by one person of domain names
incorporating marks owned by other persons.
See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum
Sept. 8, 2000) (“Registration of more than one domain name that infringes on
another’s registered mark(s) supports the inference that Respondent knew of
Complainant’s marks upon registering the domain names . . . [and t]he
registration of multiple domain names that infringe on Complainant’s trademarks
is evidence of a pattern of conduct.”); EPA European Pressphoto Agency
Accordingly, the Panel finds and determines that Respondent has registered and is using the Domain Name in bad faith.
Mars having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dovechocolatediscoveries.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Charles A. Kuechenmeister (Ret.)
Dated: September 18, 2008